Appeal 2007-1895
Application 10/719,489
(Fed. Cir. 1988) (“The consistent criterion for determination of obviousness
is whether the prior art would have suggested to one of ordinary skill in the
art that [the claimed process] should be carried out and would have a
reasonable likelihood of success, viewed in light of the prior art.” (citations
omitted)); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981) (“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.”).
We cannot subscribe to Appellants’ position that the references would
not have been combined by one of ordinary skill in this art because the
Boudreau is non-analogous art to the claimed invention and the disclosure of
Bilgrien based solely on the difference of powder and liquid between
otherwise related organosiloxane composition that contain the same kinds of
ingredients. We agree with the Examiner that the range of polydiorgano-
siloxanes taught in each of Bilgrien and Boudreau overlap with respect to
viscosity, and Appellants do not distinguish these materials from the “high
consistency polydiorganosiloxanes” encompassed by claim 1. Indeed, on
this record, one of ordinary skill in this art of compounding catalyst
containing silicone rubber compositions would have considered the
references to not only be in the same field of endeavor but also pertinent to
the problem of cooling hot organosiloxane powder compositions discharged
from the mixer which Appellants address. See Clay, 966 F.2d at 658,
23 USPQ2d at 1060-61.
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